Monday, 3 December 2012

Sometimes the misbehaviour of an Examining Division (ED) can lead an applicant into a weird situation where there is not much help to be expected from the Board of appeal.

On June 6, 2011, the ED refused the application under consideration. The applicant filed an appeal in due time. It requested that the patent be granted on the basis of the claims that had been refused by the ED.

The ED granted interlocutory revision but refused the reimbursement of the appeal fee. The Board decision contains the corresponding form 2701 :

However, on August 12, 2011, the ED informed the applicant that this decision was corrected and ... that interlocutory revision was refused!

The ED provided a justification that is ... surprising, to say the least (in France we would say “ça vaut son pesant de cacahuètes”) (my English translation):

“EPO form 2701 dated July 27, 2011, and the corresponding decision on interlocutory revision dated August 3, 2011, do not reflect the actual intention of the ED, according to which interlocutory revision cannot be granted.

Pursuant to R 140 only obvious mistakes can be corrected in decisions of the EPO. Thus it has to be examined whether such an obvious mistake within the meaning of R 140 has occurred in the present case.

In the present case, the choice of box (i) on EPO form 2701 cannot correspond to the intention of the ED because in its notice of appeal dated July 4, 2011, the applicant expressly maintained the main request that had been refused and the ED had come to the conclusion that interlocutory revision could not be granted.

Moreover, it has to be noted that the fact that the reimbursement of the appeal fee could not be granted and that this decision was left to the Board of appeal provides a clear hint to the proper intention of the ED.

Finally, the fact that the box was erroneously ticked constitutes an obvious mistake because in the opinion of the ED, the grant of interlocutory revision constitutes a substantial procedural violation. As the applicant requires the Board to examine the main request that had been refused, the grant of interlocutory revision on the basis of the auxiliary request would have the consequence that the applicant would have to file a second appeal and pay a second appeal fee, which is unacceptable (unzumutbar), even if reimbursement of this appeal fee can be requested.

In the present case, it is in particular the combination of interlocutory revision on the basis of the unamended main request and the refusal to reimburse the appeal fee that the ED considers to be unacceptable (nicht akzeptabel).

Thus the choice of the combination of interlocutory revision and the refusal to reimburse the appeal fee by the ED was not intentional; the actual intention of the ED was to remit the entire case to the Board of appeal pursuant to A 109(2).

Therefore, in the present case the ED comes to the conclusion that the decision announced on EPO form 2709 dated July 27, 2011, and the corresponding grant of interlocutory revision dated August 3, 2011, constitutes an obvious mistake that should be corrected pursuant to R 140.”

This communication was not signed; there was only the name of a formality officer in the letterhead.

Believe it or not, the original signed form appears to have been ‘doctored’; here is what is now accessible via the online Register:

During the oral proceedings before the Board, the applicant endorsed the opinion of the Board that the appeal did not cover substantive aspects and only requested the reimbursement of the appeal fee.

The applicant argued that in spite of the decision to grant interlocutory revision, the ED had not granted a patent as requested. It was to be expected that the ED would refuse the request for the same reasons as in the impugned decision. Therefore, the appeal was not granted, nor was the decision reviewed by the Board. As the applicant had paid an appeal fee, this situation resulted in a substantial procedural violation. In T 691/91 it had been decided that a grant of interlocutory revision could be a decision ultra vires justifying the reimbursement of the appeal fee.

Here is what the Board had to say on this case:

*** Translation of the German original ***

Pendency (Anhängigkeit) of a substantive appeal

[2.1] The decision to grant interlocutory revision dated July 2011 and duly signed by the three members of the ED constitutes a legally effective decision pursuant to A 109(1), first sentence.

The fact that the appellant desired to maintain the main request, which had been refused, cannot alter this finding, be it only because an ED can indeed change its opinion on the grant of a patent in view of the arguments contained in the statement of grounds of appeal.

[2.2] According to the communication dated August 12, 2011, this decision granting interlocutory revision was to be corrected so that it was set aside. It may be left unanswered whether such a correction is at all possible, because a correction can only be made by the competent entity (Stelle) in a form that is identifiable as a decision. As the communication dated August 12, 2011, has not been signed and does not identify the entity of the EPO that is responsible for its content, it is not identifiable as a decision of the competent ED of the EPO.

[2.3] Thus there is no pending appeal and the Board of appeal only has to decide on the request for reimbursement of the appeal fee.

As far as the substantive examination of the application is concerned, it is the ED that remains competent.

Reimbursement of the appeal fee

[3.1] The appeal fee is reimbursed in the event of interlocutory revision or where the Board of Appeal deems an appeal to be allowable, if such reimbursement is equitable by reason of a substantial procedural violation.

[3.2] In the present case even the appellant does not contest any more that the fact that its request for a telephone interview (filed in a letter dated June 11, 2010) was not granted, does not constitute a substantial procedural violation.

Moreover, the impugned decision is reasoned and based on reasons which the appellant was able to comment, i.e. a violation of A 123(2) of which it had been made aware as soon as in the communication dated March 30, 2010. Thus there was no substantial procedural violation in this respect either.

[3.3] However, the appellant is of the opinion that the above mentioned decision to grant interlocutory revision did constitute a substantial procedural violation justifying reimbursement of the appeal fee because its request for the grant of a patent according to the documents filed on June 11, 2010, had not been allowed and because another refusal based on the very same reasons as the impugned decision is to be expected.

As a decision granting interlocutory revision pursuant to A 109(1), first sentence, does not have to be reasoned, the decision of the ED only shows that the ED considers the appeal to be admissible and reasoned, that it sets aside the impugned decision and continues the proceedings.

Moreover, and above all, the decision to grant interlocutory revision cannot be the cause for the filing of the appeal because it – necessarily – has been made after the appeal has been filed.

Therefore, the grant of interlocutory revision cannot constitute a substantial procedural violation justifying the reimbursement of the appeal fee.

[3.4] The factual situation underlying decision T 691/91 cited by the appellant differs from the present factual situation as follows: The decision impugned by means of a second appeal by the then applicant was not, in terms of content, a decision granting interlocutory revision within the meaning of A 109(1), first sentence, but dealt with a correction of the first decision of the ED refusing [the application under consideration] in the sense that the decision did not only concern claims 1 to 4, which were the only claims that had been taken account of in the first decision, but also claims 5 to 13.The latter should also be refused. In this respect the ED was not competent (“ultra vires”) to take the second decision, which had been referred to as “rectification decision”, but the decision would have had to be directly remitted to the Board of appeal. This is what constituted the procedural violation which, according to the decision of the Board of appeal, justified reimbursement of the appeal fee paid for the second appeal.

In contrast, in the present case the decision of the ED granting interlocutory revision constitutes an effective decision within the meaning of A 109(1), first sentence, for which the department was competent according to this provision and which could not have been corrected or otherwise validly amended because the letter dated August 12, 2011, does not qualify as a decision, be it only for formal reasons. […]

The request for reimbursement of the appeal fee is dismissed.

I wonder what will now happen. It may be expected that the ED will again refuse the application, which should trigger a second appeal. So in the end the applicant will have to pay two appeal fees, just because the EPO behaved in a very unprofessional way, and there is little if any hope for reimbursement of one of these fees. What a shame.

Should you wish to download the whole decision (in German), just click here.

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comments:

The FO who initially took care of form 2701 was the same as in T1994/11 discussed just a few days ago, but here it seems that it was the ED which had a change of heart.

Art. 109(2) states that if the appeal is not allowed [...], it shall be remitted to the Board of Appeal without delay, and without comment as to its merit. (Emphasis added). The board could have mentioned this in its discussion of the "corrected decision", but did not.

From the summary of the case I understand that the board simply said that the correction was not a decision issued by the ED, so in fact was non- existent. In the proper decision, no substantial procedural violation had occurred, so no reimbursement. The point is, that an unsigned "correction" isn't identifiable as such, so it does not count. There is no evidence that it did come from the ED, nor that they had a change of mind. So it is not necessary to go intoIts lateness because it just isn't there.

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